Protecting pork and apples

Bramley apples, or more precisely ‘Traditional Bramley apple pie filling’, received protected status from the European Commission in July. The specific protection is in the form of the rather unwieldy traditional speciality guaranteed (TSG).

This is open to products which are traditional or have customary names and have a set of features which distinguish them from other similar products. These features must not result from the geographical area in which the product is produced or be based entirely on technical advances in the method of production. With TSG status, Traditional Bramley apple pie filling joins Traditionally Farmed Gloucestershire Old Spots Pork and Traditional Farmfresh Turkey as UK products having such protection, while Birmingham Balti and Watercress are pending approval.

Before the news in relation to Bramley apples I, perhaps like many other practitioners, was not aware of TSGs. Indeed, the protected designation of origin (PDO) and protected geographical indication (PGI) are considerably more well known. A PDO covers agricultural products and foodstuffs which are produced, processed and prepared in a given geographical area using recognised know-how.

A PGI covers agricultural products and foodstuffs closely linked to the geographical area in question, and at least one of the stages of production, processing or preparation must take place in the area. UK examples of PDOs are Cornish Clotted Cream, Jersey Royal Potatoes and Yorkshire Forced Rhubarb. UK examples of PGIs are Stornoway Black Pudding, Welsh Wine and Whitstable Oysters.

Benefits

There are several benefits to registering product names under this general umbrella of the EU Protected Food Names scheme. The principal benefit of interest to intellectual property practitioners and their clients is clearly the ability to prevent unauthorised use, imitation or evocation throughout the EU of the name by an identical or a confusingly similar name, ie, to have exclusivity. In the UK, applications are handled by the Department for Environment, Food & Rural Affairs. There appear to be no official fees, but the application process seems intensive and time-consuming, so there are costs associated with an application.

Many readers will be familiar with the trademark reform package set to overhaul the Community trademark (CTM) system in the imminent future. The existing CTM Regulation provides for refusal of a CTM application on absolute and relative grounds on the basis of a PDO, PGI or TSG. That means the Office for Harmonization in the Internal Market can refuse an application on these bases and the owner of a PDO, PGI or TSG can oppose it. However, the current provisions in relation to oppositions do not refer specifically to PDOs, PGIs or TSGs. The new regulation will therefore contain explicit references to PDOs, PGIs and TSGs as absolute and relative grounds for refusal, which is a positive development for owners of these protected names, considering that the names are on a register, so proof of existence and ownership should be relatively straightforward.

Another potential future development in relation to PDOs, PGIs and TSGs is the possible extension of GIs to protect non-agricultural products such as marble, crystal, knives and textiles, which is currently possible in only 15 member states of the EU. A commission debate, likely to lead to substantive progress, is in the pipeline.

“Another potential future development in relation to PDOs, PGIs and TSGs is the possible extension of GIs to protect non-agricultural products such as marble, crystal, knives and textiles.”

This means that, at present, non-agricultural producers have to apply for protection in each country where it is available and rely on other means of protection in other countries. It appears that the proposal is for harmonised EU-wide protection for non-agricultural products on a single register at low cost. According to French MEP Virginie Rozière, It is estimated that this could lead to an increase of up to 25% in exports.

If this additional means of protection comes into effect, it will enable producers to invoke an additional layer of protection against third-party infringement and counterfeiting, which will be beneficial, particularly for those who produce products which they may not be able to protect by other means, for example if the product name is likely to be considered descriptive or otherwise non-distinctive, such as Scottish Tartan. But is there an appetite for this among stakeholders?

Is it needed?

In July 2014, the Commission published a green paper titled “Making the most out of Europe’s traditional know-how”, and invited stakeholders to answer various questions. Although it received just 136 responses, more than 60% of respondents considered existing arrangements to be insufficient, too complicated, too diverse and too expensive. Additionally, and of primary interest to practitioners, respondents were concerned about the possibility of consumers being misled by imitations being passed off as GI products, and about the cost of bringing parallel proceedings against imitators, which has a negative impact on trade within the EU.

However, there are also concerns that the proposed protection will increase administrative burdens and have a negative impact on trademark owners. Indeed, some respondents felt that EU collective and certification trademarks would be a preferable alternative. This takes us back to the reform package and the draft trademark regulation which contains provisions for registration of EU certification marks, whereas the existing regulation provides only for registration of collective marks.

Another real and justified point of discussion is that the proposed system would allow GI protection of non-EU products in the EU. This is seen as a basis for facilitating trade with countries outside the EU which have GI protection for both agricultural and non-agricultural products. Countries such as Australia, Canada and the US do not have GI protection outside their trademark systems and the proposed regime may therefore provoke a negative reaction from them.

There appear to have been no further developments to date, but Reuters reported on July 24, 2015 that negotiations between the US and the EU in relation to a Transatlantic Trade and Investment Partnership are stalling on the 1,200 GIs for which the EU is seeking recognition. Specifically, the US is objecting to the inclusion of names such as gorgonzola and feta on the list, arguing that they are generic, like cheddar and mozzarella, neither of which have GI status. Indeed, one US trade negotiator was reportedly moved to ask “show me on the map where feta is” and US producers of feta cheese are equally unhappy.

These are interesting times, with much up in the air, and while it seems likely that we will have an EU non-agricultural GI at some point in the future, it will be interesting to see whether the 1,200 GIs survive the US and EU trade negotiations without some major concessions.

Chris McLeod is president of the  Institute of Trade Mark Attorneys and a partner at  Elkington and Fife. He can be contacted at: chris.mcleod@elkfife.com